Should I Trade-mark It?

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What is a Trade-mark?

A trade-mark is a word (or words), a design, or a combination of both, used to identify your goods or services. Your trade-mark is really your identity in the marketplace. It helps your customers distinguish your products and services from others. For successful brands, a registered trade-mark becomes a valuable asset worth protecting. In Canada, you can protect your trade-mark by registering it with the Canadian Intellectual Property Office (“CIPO”).

Why Protect your Trade-mark?

Your business name registration provides very little protection against others using an identical name, or a confusingly similar name, so long as they are not ‘passing themselves off’ as the same business. To prevent people from using your name anywhere in Canada, it is important to register it as a Canadian trademark. By registering a trade-mark you:

Are granted exclusive rights, for 15 years, to its use in the Canadian marketplace. At the close of the 15 year period you can apply to renew the registration;

Create an identifiable asset;

Protect against claims of infringement or misuse by others; and

Give yourself a remedy against someone improperly using your trade-mark, or one that is confusingly similar.

While the owner of an unregistered trade-mark has limited common law rights, the owner of a registered trademark often has rights which trump those of an unregistered one and can prevent others from using the mark or a confusingly similar one. In short, registering your trade-mark is prima facie evidence of ownership, which means, in a dispute with a competitor or someone improperly using your mark, the onus will be on them to prove an entitlement to it.

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The recent case of Harley-Davidson Motor Company Group, LLC v. Manoukian, 2013 FC 193 (CanLII) highlights the benefits of registering your trade-mark to give you a remedy against an infringer. In Harley-Davidson’s case, they were the registered owner of their classic emblem trake-mark (pictured below). The defendant, Johnny Manoukian was found to have been selling products bearing the trade-mark or a mark confusingly similar and was ordered by the Federal Court of Canada to pay damages of more than $115,00.00 to Harley-Davidson.

The Risk Of Not Registering your Trade-mark

Not registering your trademark when similar competitors are in (or may enter) the market exposes you:

To having to change your name and/or your branding;

Waste expenses on marketing materials which a court may find you cannot use; or worse

Forfeit your marketing materials to your competitor who established a right to ownership; and

In some cases, you may have to account for the profits made by using the trade-mark. That is, a court may order that you pay all the profits you made while using the trade-mark to the lawful owner.

What Can and Cannot be Registered?

Each mark is examined in accordance with the Trade-marks Act. A lawyer’s advice should be sought on whether your trade-mark is registrable. CIPO also sets out the kinds of marks that are generally not registrable, include the following:

names and surnames;

clearly descriptive marks;

deceptively misdescriptive marks;

words that denote a geographical location commonly known to be the place of origin of such goods or services;

words or designs that are considered confusing with a previously registered trade-mark or pending trade-mark; and

words or designs that nearly resemble a prohibited mark.

When should I Register my Trade-mark?

In short, it’s never too soon to take measures to protect your trade-mark. It’s always advisable to register as soon as possible before a competitor or another company with a similar name or trade-marks does. The more you invest in marketing and building equity in your brand the more you risk losing. You can also impress your lawyer by doing your own CIPO database search for the name you want to protect, to see if its already registered.

John Wires is a Toronto business lawyer who comes from a corporate litigation background. John is the founder of Wires Law, a law firm serving corporate, technology and e-commerce clients across Canada. He was called to the Bar of the Law Society of Upper Canada in 2011 and has appeared in the Ontario Superior Court, the Ontario Court of Appeal and private arbitrations.
John graduated from law school with first class honours specializing in both International Trade and Corporate Commercial Law. Having litigated shareholder and employee disputes he understands the value of companies protecting their businesses with the proper upfront legal work many Canadian businesses lack.

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Wires Law is a Toronto business & e-commerce law firm delivering legal services to entrepreneurs, consultants, freelancers, micro, small and medium sized business across Canada. In many cases, we act as your virtual general counsel. We’re also available in person in Toronto.